Heuft had originally asserted
6,155,408 as well, parent to '974, but '408 was dropped from the suit, for
lack of merit with regard to infringement.

The '408 patent is directed to a "method and apparatus for rotating
rotationally symmetrical containers such as bottles, while transporting them
under backup pressure." During prosecution of the '408 patent, the examiner
repeatedly rejected the claims over PCT Publication WO 83/00135 ("the
Christian reference"). The examiner eventually allowed the claims, however,
after Heuft made various arguments and amendments in response to the
rejections. The '974 patent is directed to a "method and apparatus for
inspecting rotating containers." It is a divisional of the '408 patent, and
therefore includes an identical specification. The examiner allowed all of
the claims of the '974 patent without rejection.

IDC argued that prosecution estoppel bottled claim scope.

IDC argues that the claims of the '974 patent cannot be construed to
encompass stably arranging containers using exit angles less than 30°,
because such angles were disclaimed during prosecution of the related '408
patent. Heuft counters that the claim terms were correctly construed,
contending that the prosecution history of the '974 patent is silent as to
the measure of the exit angle, and that any disclaimer that may have arisen
during prosecution of the '408 patent does not apply to the claims of the
'974 patent.

Case law for prosecution estoppel requires "clear and unmistakable"
disclaimer.

Prosecution disclaimer occurs when a patentee, either through argument or
amendment, surrenders claim scope during the course of prosecution. Elbex
Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir.
2007). Amendments or arguments that are merely vague, ambiguous, or subject
to other reasonable interpretation are not sufficient to surrender claim
scope. Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed.
Cir. 2003). Rather, in order for prosecution disclaimer to attach, the
patentee's actions must be "clear and unmistakable." Id. at 1326.

IDC had a winner.

We agree with IDC that in the '408 patent, Heuft disclaimed "arranging .
. . containers . . . stable" or "means for the stable arrangement of . . .
containers" using angles less than 30°. This is because its actions during
prosecution were clear and unmistakable.

The examiner persisted with a prior art reference until the claims were
amended to get around it.

From the outset of prosecution of the '408 patent application, the
examiner rejected all pending claims over the Christian reference under 35
U.S.C. §§ 102 and 103. Heuft, in response, made amendments to the claims and
argued, inter alia, that "the present invention provides for the increase
and sharp decrease at an angle â of the distance between the railings
creating the stable arrangement... The examiner did, however, stop applying
the Christian reference after Heuft's amendments to the claims, presumably
because the added limitations persuaded the examiner that the claims were
patentably distinct.

Thus, throughout the course of prosecution of the '408 patent, Heuft not
only repeatedly distinguished its claims over the Christian reference on the
basis of the large exit angle's ability to stably arrange the containers, it
also amended all of those claims to require an exit angle between 30° to
100°, a span which directly tracks the only discussion in the specification
indicating an appropriate range for stably arranging containers. Under these
circumstances, we have little difficultly concluding that Heuft clearly and
unmistakably disclaimed exit angles less than 30°, at least with respect to
the '408 patent. The salient question is whether this disclaimer flows to
the related '974 patent.

'974 was granted without rejection. But, in U.S. case law, that does not
necessarily release claim construction of a child from the shackles of its
parent. And so it was here.

It is well-settled that "prosecution disclaimer may arise from disavowals
made during the prosecution of ancestor patent applications." Ormco Corp.
v. Align Tech., Inc., 498 F.3d 1307, 1314 (Fed. Cir. 2007) (quoting
Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1333 (Fed. Cir.
2003)). "When the application of prosecution disclaimer involves statements
from prosecution of a familial patent relating to the same subject matter as
the claim language at issue in the patent being construed, those statements
in the familial application are relevant in construing the claims at issue."
Id. Thus, the issue is whether the disclaiming statements Heuft made with
respect to the '408 patent related to the same subject matter that is at
issue in the '974 patent.

[T]he statements Heuft made during prosecution of the '408 patent related
to the same subject matter that is at issue in the relevant claim
limitations of the '974 patent--namely, "arranging . . . containers . . .
stable" and "means for the stable arrangement of . . . containers."
Consequently, the arguments and amendments Heuft made during prosecution of
the '408 patent also operate to disclaim exit angles less than 30° in the
claims of the '974 patent.

Having its claims narrowed, infringement was quashed.

[W]hen Heuft broadly disclaimed exit angles less than 30° during
prosecution, it foreclosed the possibility that it could later attempt to
assert that a 12° or 14° exit angle is structurally equivalent to an exit
angle that, due to the disclaimer, must be 30° or more. Consequently,
because it is undisputed that the exit angles of IDC's accused products are
substantially less than 30°, "the evidence . . . permits only one reasonable
conclusion, and that conclusion is contrary to the jury's verdict." Pavao,
307 F.3d at 918. Accordingly, IDC is entitled to judgment of
non-infringement as a matter of law.

Reversed and remanded "to enter judgment in favor of IDC."

Inexplicably, this rather tidy ruling, which could serve as precedent, is
foreclosed by some form of CAFC paranoia in making the ruling non-precedential.

Posted by Patent Hawk at June 25, 2008 1:39 PM
| Claim Construction

Comments

Could someone please remind me once again where we are with precedential and non-precedential. I thought Roberts went on an anti-non-precedential jihad after he was put on the USSCt. Doesn't the CAFC have new local rules on this?

I mean, I don't see how these judges can justified getting paid if most of what they write is "non-precedential."